Intellectual Property Specialist

Strictly Recruitment; California; On-site; USD 135,000 - 152,000; Full time

Benefits offered by this job

Discretionary annual bonus

Medical, dental, and vision insurance

401(k) retirement plan

Paid time off

Job summary

Strictly Recruitment USA is partnering with a leading global law firm to recruit a Senior IP Specialist in patent prosecution. You will own complex US and international portfolios, file applications, respond to USPTO notices and coordinate with attorneys, agents and overseas colleagues.

You will work in a fast-paced, detail-oriented environment, manage deadlines, support budgeting and billing, and contribute ideas to improve processes within the IP practice.

Qualifications

• At least five years of hands-on patent prosecution support experience.
• Strong knowledge of USPTO procedures and prosecution deadlines.
• Experience preparing and filing US and international patent applications.
• Confidence managing busy dockets with minimal supervision.
• Exceptional attention to detail under time pressure.
• Strong communication, organizational and problem-solving skills.
• Proactive approach and ability to follow issues through to resolution.
• Experience with technology and/or energy patent portfolios a bonus.
• Bachelor’s degree or equivalent education/experience.

Responsibilities

• Managing and clearing US and international patent prosecution dockets.
• Tracking deadlines across complex global portfolios.
• Preparing and filing US, PCT, national-stage, provisional, non-provisional, utility and design applications.
• Preparing amendments, responses, payments, declarations and powers of attorney.
• Preparing and filing Information Disclosure Statements and maintaining prior-art records.
• Responding to USPTO notices and other prosecution-related correspondence.
• Coordinating foreign prosecution activity with attorneys and overseas associates.
• Monitoring claims and cross-citation of prior art across patent families.
• Reporting filings and portfolio developments to clients.
• Supporting billing enquiries, prosecution budgets and invoice review.
• Recording billable time accurately and promptly.

Skills

Patent prosecution

US patent procedures

Deadline management

Communication skills

Independent work

Education

Bachelor's degree

Job description

SENIOR IP SPECIALIST – PATENT PROSECUTION

Strictly Recruitment USA is working with one of the world’s leading global law firms on an outstanding opportunity for an experienced IP Specialist to join its highly regarded Intellectual Property team.

This is a senior, hands-on position supporting sophisticated US and international patent portfolios. You will work closely with attorneys, patent agents, foreign associates and IP professionals across multiple jurisdictions, taking real ownership of the patent prosecution process and ensuring critical deadlines are met without fail.

This is not simply a docketing or administrative role. The successful candidate will be trusted to manage complex matters independently, solve problems proactively and contribute ideas that improve processes across the wider IP practice.

You will be responsible for:

• Managing and clearing US and international patent prosecution dockets
• Tracking statutory and non-statutory deadlines across complex global portfolios
• Preparing and filing US, PCT, national-stage, provisional, non-provisional, utility and design applications
• Preparing amendments, responses, issue-fee payments, declarations, assignments and powers of attorney
• Preparing and filing Information Disclosure Statements and maintaining prior-art records
• Responding to USPTO notices, including Notices to File Missing Parts and other prosecution-related correspondence
• Preparing Notice of Allowance checklists and reviewing issued patents for accuracy
• Coordinating foreign prosecution activity with attorneys, clients and overseas associates
• Coordinating sequence listings, formal drawings and other materials prepared by external vendors
• Monitoring pending claims and coordinating the cross-citation of prior art across global patent families
• Reporting filings and portfolio developments to clients
• Supporting billing enquiries, prosecution budgets, fixed-fee arrangements and invoice review
• Recording billable time accurately and promptly
• Identifying opportunities to improve systems, processes and working practices across the IP team

We are looking for someone with:

• At least five years of hands-on patent prosecution support experience
• Strong knowledge of USPTO procedures and patent prosecution deadlines
• Experience preparing and filing US and international patent applications
• Confidence managing busy patent dockets with minimal supervision
• Exceptional attention to detail and the ability to work accurately under significant time pressure
• Strong communication, organizational and problem-solving skills
• A proactive approach and the confidence to follow issues through to resolution
• Experience supporting technology and/or energy patent portfolios would be particularly valuable
• Previous billing, electronic billing or fixed-fee experience would be advantageous
• A bachelor’s degree or an equivalent combination of education and relevant experience

This is an opportunity to join a global law firm and work at the heart of a sophisticated international IP practice.

You will be given responsibility, exposure to complex patent portfolios and the opportunity to become a trusted member of a collaborative, multi-jurisdictional team. The firm offers excellent long-term career prospects, high-quality work and a compensation package at the top end of the market.

San Francisco: to $150,000

Silicon Valley: to $152,000

Los Angeles: to $135,000

The position is also eligible for a discretionary annual bonus and a comprehensive benefits package, including medical, dental and vision insurance, a 401(k) retirement plan and paid time off.

Strictly Recruitment USA welcomes applications from all suitably qualified candidates. Qualified applicants with arrest and conviction records will be considered in accordance with applicable legislation, including the San Francisco Fair Chance Ordinance and the City of Los Angeles Fair Chance Initiative for Hiring Ordinance.